In re Auto Parts Avenue, LLC

This Opinion is Not a Precedent of the TTAB

Mailed: March 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE _____

Trademark Trial and Appeal Board _____

In re Auto Parts Avenue, LLC

_____

Serial No. 87804250 _____

Tommy SF Wang of Wang IP Law Group PC for Auto Parts Avenue, LLC.

Drew Ciurpita, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____

Before Cataldo, Wellington and Kuczma, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge: Applicant, Auto Parts Avenue, LLC, seeks registration on the Principal Register

of the mark AUTO PARTS AVENUE (in standard characters, AUTO PARTS

disclaimed), identifying the following goods:

Lights for vehicles; rear lights for vehicles; tail lights for vehicles, in International Class 11; and

Automotive door handles, in International Class 12.1

1 Application Serial No. 87804250 was filed on February 20, 2018, based upon Applicant's claim of use of the mark in commerce since January 15, 2007 under Section 1(a) of the Trademark Act, 15 U.S.C. ? 1051(a), as to both classes of goods. Applicant disclaimed "AUTO PARTS" in response to the Examining Attorney's requirement.

Serial No. 87804250

The Trademark Examining Attorney has refused registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that AUTO PARTS AVENUE, when used in connection with the identified goods, so resembles the mark AUTOMOTIVE AVENUES (in standard characters with AUTOMOTIVE disclaimed), in two registrations issued on the Principal Register to the same entity for

Automobile dealerships; retail store services featuring automotive accessories, in International Class 35,2 and Automotive maintenance and repair, in International Class 37.3 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and filed a Request for Reconsideration. When the Examining Attorney denied the Request for Reconsideration, this appeal resumed. The Examining Attorney and Applicant filed briefs.4 We affirm the refusal to register.

I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co. (DuPont), 476

2 Registration No. 3900245 (`245 Reg.) issued on January 4, 2011. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 3 Registration No. 3900325 (`325 Reg.) issued on January 4, 2011. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 4 Applicant filed its brief on June 12, 2019, prior to the Examining Attorney's July 30, 2019 denial of Applicant's April 15, 2019 Request for Reconsideration. On October 2, 2019, Applicant filed a "Supplemental Brief" and the Examining Attorney filed his brief thereafter on November 22, 2019. Applicant did not file a reply brief to the Examining Attorney's brief. We thus construe Applicant's "Supplemental Brief" as an early-filed reply brief.

- 2 -

Serial No. 87804250

F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

A. Relatedness of the Goods and Services and their Channels of Trade With regard to the goods and services, channels of trade and classes of consumers, we must make our determinations under these factors based on the goods and services as they are identified in the application and cited registrations. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). "This factor considers whether `the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.'" In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). Because there are no limitations as to channels of trade or classes of purchasers in the recitation of goods or services in either the cited registrations or the application, we must presume that the identified goods and services move in all channels of trade normal for such goods and services and are available to all potential

- 3 -

Serial No. 87804250

classes of ordinary consumers of such goods and services. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).

Applicant's goods are lights, rear lights and tail lights for vehicles in Class 11 and automotive door handles in Class 12. The services in the cited registrations include retail store services featuring automotive accessories, automobile dealerships, and automotive maintenance and repair. The "automotive accessories" that are the subject of the retail store services in the `245 Reg. are broadly worded and may be presumed to include automobile lights and door handles. Similarly, the "Automotive maintenance and repair" services identified in the `325 Reg. are broad enough to include repairing and possibly replacing automobile lights and door handles. Thus, Applicant's automotive goods appear to be related to the automotive services in the cited registrations as identified.

In support of the refusal of registration, the Examining Attorney introduced with her June 9, 2018 first Office Action5 and December 31, 2018 final Office Action6 printouts from the following third-party internet websites offering both automotive lights and door handles in particular, or automotive parts in general, on the one hand, and online retail store services featuring automotive parts or automotive repair and maintenance services on the other, under the same marks, including: CarID; Auto

5 At .pdf 116-188. All citations to the TSDR database in this decision are to the downloadable .pdf version of the documents. 6 At .pdf 71-111.

- 4 -

Serial No. 87804250

Parts Warehouse; Parts Geek; Advance Auto Parts; Pep Boys; Town Square Auto Parts; Ford; Chevrolet7 and Car Quest.8 This evidence demonstrates that at least nine third parties identify Applicant's goods and the services in the cited registrations under the same mark.

These websites demonstrate that goods of the type offered by both Applicant in both classes and the services identified in both cited registrations are marketed and sold together online under the same marks. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"). "We find that consumers would readily perceive these types of [goods and] services as being sufficiently related as to be offered by a single business." In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016).

In addition, the Examining Attorney introduced into the record with her June 9, 2018 first Office Action9 and December 31, 2018 final Office Action10 copies of five use-based, third-party registrations for marks identifying automotive parts, as well as retail automotive parts store services and automotive repair services. As a general proposition, although use-based, third-party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they

7 Chevrolet's website also offers automobile dealership services in addition to the services listed above. 8 At .pdf 7-14. 9 At .pdf 34-115. 10 At .pdf 10-53.

- 5 -

Serial No. 87804250

nonetheless may have some probative value to the extent they serve to suggest that the goods are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

In this case, the totality of the internet and third-party registration evidence demonstrates that the identified goods and services may emanate from the same sources under the same marks. In our likelihood of confusion analysis, these findings under the second DuPont factor support a finding that confusion is likely.

Applicant argues (internal citations omitted) that its goods primarily consist of budget automobile parts sold online through for home repair or replacement. Conversely, Registrant's services consist primarily of automobile dealerships and automobile repair or detailing services which offer retail sale of goods in conjunction with its services. Unlike the Applicant, Registrant engages in the exact type of list price, "middlemen" activities which Applicant seeks to avoid through its online sales of parts for shipment direct to the consumer. Due to the significant differences in the nature of the goods and services involved and the nature in which they are offered to the public, confusion is not likely to occur between Applicant's goods and Registrant's services.11

However, neither Applicant's automotive parts nor the services identified in the cited registrations are so limited. "We have no authority to read any restrictions or limitations into the [applicant's or] registrant's description of goods [or services]." In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009). Nor may an applicant restrict the scope of the services covered in the cited registration by argument or extrinsic

11 4 TTABVUE 12.

- 6 -

Serial No. 87804250

evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). See also Octocom Sys., Inc., 16 USPQ2d at 1787 ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed."). We must therefore presume that Applicant's automotive parts and Registrant's services that sell, repair and maintain them, identified without limitation in all instances as to trade channels, consumers and cost, are available at all price points to all classes of consumers.

Evidence of record discussed above demonstrates that both Applicant's goods and the services identified in the cited registrations may be encountered by the same classes of consumers under the same marks in at least one common trade channel, i.e., the physical locations and corresponding websites of entities providing automotive parts and automotive repair, maintenance and retail store services. Because the identifications of goods and services in the involved application and cited registration do not recite any limitations as to the channels of trade in which the goods or services are or will be offered under the marks, we must presume that these goods and services are offered in all customary trade channels. See Citigroup v. Capital City Bank Grp., 98 USPQ2d at 1261; In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).

- 7 -

Serial No. 87804250

We find that the DuPont factors of the relatedness of the goods and services,

channels of trade and consumers weigh in favor of likelihood of confusion.

B. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent

of any actual confusion, in light of the length of time and conditions under which

there has been contemporaneous use of Applicant's and Registrant's subject marks.

DuPont, 177 USPQ at 567. Applicant argues (internal citations omitted) that

The first date of use for Applicant's Mark is January 15, 2007, whereas Registrant's first date of use of its marks date back to 1987. For twelve years, Applicant's Mark and the Registered Marks have coexisted in the minds of consumers without a single reported instance of actual confusion. Even if the Board finds Applicant's Mark and Registrant's mark to be similar for the purposes of likelihood of confusion, the fact that both marks have coexisted in use for over a decade demonstrate the improbability of any actual confusion.12

We do not accord significant weight to Applicant's contention, unsupported by any

evidence, that there have been no instances of actual confusion despite

contemporaneous use of the respective marks. The Federal Circuit has addressed the

question of the weight to be given to an assertion of no actual confusion by an

applicant in an ex parte proceeding:

With regard to the seventh DuPont factor, we agree with the Board that Majestic's uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that selfserving testimony of appellant's corporate president's unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The

12 4 TTABVUE 17.

- 8 -

 ................
................

In order to avoid copyright disputes, this page is only a partial summary.

Google Online Preview   Download